Wednesday, August 24, 2016

PTAB Reverses Examiner’s Patent-Ineligible Subject Matter Rejection of Method Claims for Using Multi-Pixels Spectral Images to Identify Microorganisms

Takeaway: The PTAB reversed an Examiner's rejection of claims for utilizing multi-pixel spectral images to identify microorganisms under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.  In part, the PTAB focused on the practical application of the claimed subject matter to find that the claims do not preempt the abstract idea or any natural law.  (Ex parte Ismail, Appeal No. 2014-005477, PTAB, July 1, 2016).
Ex parte Ismail
Appeal 2014-005477; Application No. 11/630,856; Technology Center 1600
Decided: July 1, 2016
Details:  In Ex parte Ismail, the PTAB reversed an Examiner’s rejection of claims for using multi-pixels spectral images to identify microorganisms under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.
Claim 1, which is representative of the claimed subject matter, recites:
1. A method for characterizing a microorganism said method comprising:
a) obtaining at least one multi-pixels spectral image of a sample of said microorganism, wherein each pixel of said multi-pixels spectral image has a corresponding spectrum;
b) selecting one or more spectra from said multi-pixels spectral image, wherein said selecting is based on one or more spectral characteristics of said corresponding spectrum; and
c) identifying said microorganism by comparing said one or more selected spectra with spectra of reference microorganisms from a database to determine an identity of said microorganism.
At step one of the Alice/Mayo framework, the Examiner found that the claims were directed to the abstract idea of data manipulation.  More specifically, the Examiner found that the claims recite “methods for characterizing a microorganism by determining an identity of an organism” through “empirical and data analysis and acquisition steps [that] are well-understood, conventional, and routine in diagnosing imaging microorganisms.”   Additionally, the Examiner found “there is no clear-cut practical application of the objective of the claim” and thus concludes the claims are drawn to a patent-ineligible “law of nature/natural principle.”  The Examiner then went on to find that the claims “recite neither a physical transformation nor a critical tie of a significant step to a particular machine.”
The PTAB agreed with the Appellant in finding that the Examiner did not persuasively show that the claims, considered in their entirety, are limited to an abstract idea or natural principle. For example the Appellants argued that the claim limitations of claim 1 require obtaining a multi-pixels spectral image of a sample and then selecting a spectra from that image based on its spectral characteristics.  Additionally, the claim limitations required that selected spectral data of the sample be compared with spectral data of reference microorganisms in a database to identify the sample microorganism.  The Appellants argued that these limitations tied the claim to a particular machine and that comparing spectra from pixels of the image with spectra from a database is not merely a mental process as argued by the Examiner.  For instance, the Examiner argued that the “body of independent claim 1 relies on image data analysis of image data … [that] may be interpreted to be obtained empirically.”  However, the PTAB found that the Examiner did not adequately explain this contention to find that the claimed subject matter was not an abstract idea under step one of the Alice/Mayo framework.
The PTAB then addressed the claimed subject matter under step two of the Alice/Mayo framework (whether the claimed subject matter includes an “inventive concept”).  Similar to the findings with respect to step one, the PTAB was unconvinced that the Examiner set forth reasoning that the “steps recited in the claims are so conventional and routine that the claims, in their entirety, lack any inventive concept.” For this portion, the PTAB seemed to focus on whether the claims would wholly preempt “access to the building block itself.” More specifically, the PTAB stated that “the Examiner has not persuasively demonstrated that the claim elements here add nothing of substance such that the claims stand to preempt any law of nature or abstract idea alone.”  In contrast, the PTAB found that “the rejected claims include multiple steps directed to a practical application of a particular type of spectral-image analysis.”
Based upon these findings, the PTAB reversed the Examiner’s rejections of the claims as being directed to patent-ineligible subject matter.
My two cents:  In line with the decision in BASCOM, the PTAB and courts are starting to focus on whether the claims are directed to a practical application of the alleged abstract idea or whether the claims encompass the abstract idea (and thus preempt that abstract idea).  Applicants may wish to utilize these type of arguments, as it appears that some decisions are relying on the practical application aspect of the claimed subject matter.  

Monday, July 11, 2016

PTAB Utilizes Enfish to Find Claim Directed to Bit Slipping is Directed to Patent-Eligible Subject Matter

Takeaway: The PTAB issued a decision overturning an Examiner's rejections of method claims directed to bit slipping as being directed to patent-ineligible subject matter. The Examiner rejected the method claims at issue as being directed to an abstract idea under step one of the Alice/Mayo framework. In overturning the Examiner's rejection, the PTAB utilized the decision in Enfish v. Microsoft to find that the claims were directed to improving the functioning of a computer. (Ex parte Carvalho, Appeal 2015-001076, PTAB July 6, 2016)
Details:
Ex parte Carvalho
Appeal 2015-001076; Application No. 12/283,652; Technology Center 2600
Decided: July 6, 2016
In a decision released on July 6, 2016, a PTAB panel found method claims directed to "bit slipping according to information regarding aligning of words" as directed to patent-eligible subject matter under 35 U.S.C. § 101. Claim 14, which is illustrative of the subject matter rejected as directed to patent-ineligible subject matter, recites:
14. A method comprising:

aligning words to a desired word boundary, wherein each of the words has a plurality of bits;

receiving from a word aligner, by a bit slipper, information regarding the aligning; and

slipping bits of the words, wherein total delay due to the aligning and the slipping is constant for all phases of a recovered clock signal,

wherein the aligning and the slipping are performed by a transceiver system.

The Examiner rejected claim 14 as being directed to patent-ineligible subject matter because claims 14 was "a mere statement of a general concept," and that its recitation of a "transceiver system," a "recovered clock signal," and the functions of aligning and slipping are insufficient to make the claim patent eligible. More specifically, the Examiner found that claim 14 was directed to the abstract idea of "bit slipping according to information regarding the aligning of words."
The PTAB disagreed with the Examiner and cited the recent Federal Circuit decision in Enfish, LLC v. Microsoft Corp.,_F.3d_, No. 2015-1244, 2016 WL 2756255, (Fed. Cir. May 12, 2016) for its support. Specifically, the PTAB explained that Enfish looked to "improvements in computer-related technology, including software improvements, are not inherently abstract, and thus, it is 'relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis'" to find the claims at issue in Enfish as directed to patent-eligible subject matter.
The PTAB then explained that the rejected method claims were directed to "an improvement in the functioning of a computer (i.e., eliminating word aligner latency delay uncertainty) and not to the addition of general-purpose computer components to a fundamental economic practice or mathematical equation." To support this decision, the PTAB looked to the specification of Appellant's application to justify that the claims were directed to the improvement in the functioning of a computer. More specifically, the PTAB identified that the specification taught how prior art systems would introduce "a Deserializer/Word aligner latency uncertainty." The PTAB then contrasted the deficiencies of the prior art with the solutions set forth in the specification. Specifically, the PTAB cited that, in an embodiment, the invention "solves this problem of latency uncertainty by using a bit slipper so that the total delay from word aligning and bit slipping is constant for all recovered clock phases, which 'allows for having a fixed and known latency between the receipt and transmission of bits for all phases of parallelization by the deserializer.'"
As such, the PTAB found that claims at issue were not directed to an abstract idea under step one of the Alice/Mayo framework but instead were directed to patent-eligible subject matter because the claims were directed to an improvement in the functioning of the computer.

Takeaway:  This a useful decision by the PTAB illustrating how to rebut an Examiner's rejection under step one of the Alice/Mayo framework. For example, Applicants and practitioners may contemplate including prior deficiencies to illustrate the technological improvements and benefits of the invention in order to align the claims at issue with the decision in Enfish (illustrating that claims are directed to improving the functioning of the computer).  

Wednesday, July 6, 2016

Federal Circuit Further Defines Alice Step Two to Find Claims Reciting Conventional Computing Components to Include Inventive Concept

Takeaway: The Federal Circuit issued a decision expanding upon "inventive concept," finding that the inquiry requires more than identifying that each claim element, by itself, was known in the art. Based upon this finding, the Federal Circuit found that claims directed to a specific implementation of filtering content on the Internet did include an inventive concept where the claims set forth a "non-conventional and non-generic arrangement of known, conventional pieces." (BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC, No. 2015-1372 (Fed. Cir. June 27, 2016)).

Details: BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC
No. 2015-1372
Decided: June 27, 2016

On June 27, 2016, the United States Court of Appeals for the Federal Circuit issued a decision in BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC further expanding upon step two of the Alice/Mayo framework. As a quick refresher, step one of the Alice/Mayo framework determines whether the claims recite merely an abstract idea, and step two of the Alice/Mayo framework determines whether the claims, if directed to an abstract idea, include an "inventive concept." As stated in Alice v. CLS Bank, "an inventive concept that transforms the abstract idea into a patent-eligible invention must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer."

The patent at issue, U.S. Patent No. 5,987,606, included two groups of claims: a first group limited to individual-customizable filtering on a remote ISP server, and a second group further limited to a hybrid filtering scheme implemented on the ISP server comprised of a master-inclusive list, an individual-customizable set of exclusive lists, and an individual-customizable set of inclusive lists. Claim 1 was representative of the individual-customizable filtering and recited:

1.  A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising:

a local client computer generating network access requests for said individual controlled access network accounts;

at least one filtering scheme;

a plurality of sets of logical filtering elements; and

a remote ISP server coupled to said client computer and said Internet computer network, said ISP server associating each said network account to at least one filter- ing scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements.

Claim 23, which depends upon claim 22, was representative of the hybrid filtering scheme, and claims 22 and 23 recited:

22. An ISP server for filtering content forwarded to controlled access network account generating network access requests at a remote client computer, each network access request including a destination address field, said ISP server comprising:

a master inclusive-list of allowed sites;

a plurality of sets of exclusive-lists of excluded sites, each controlled access network account associated with at least one set of said plurality of exclusive-lists of excluded sites; and

a filtering scheme, said filtering scheme allowing said network access request if said destination address exists on said master inclusive-list but not on said at least one associated exclusive-list, whereby said controlled access accounts may be uniquely associated with one or more sets of excluded sites.

23.  The ISP server of claim 22 further comprising:

a plurality of inclusive-lists of allowed sites, each controlled access user associated with at least one of said plurality of inclusive-lists of allowed sites, said filtering program further allowing said network access request if said requested destination address exists on said at least one associated inclusive-list.
This case came to the Federal Circuit through on an appeal filed by BASCOM from a district court's decision to grant a motion to dismiss under Rule 12(b)(6). In its analysis, the Federal Circuit agreed with the district court's assessment that the claims were directed to the abstract idea of filtering content on the Internet at step one of the Mayo/Alice framework.

However, the Federal Circuit disagreed with the district court's assessment that the claimed subject matter did not include an "inventive concept." The district court found that BASCOM did not adequately assert that the claims included an "inventive concept" because "considered individually, or as an ordered combination, are no more than routine additional steps involving generic computer components and the Internet, which interact in well-known ways to accomplish the abstract idea of filtering Internet content.”

The Federal Circuit agreed that the limitations of the claims, when taken individually, did recite "generic computer, network and Internet components." However, the Federal Circuit stated that the "inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art" and that "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces." To support its decision, the Federal Circuit stated that the claims did not preempt "all ways of filtering content on the Internet" but instead were directed to "a particular, practical application of that abstract idea."

The Federal Circuit went on analogize the claims at issue with the claims at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). For example, the Federal Circuit identified that the present claims were claiming a technology-based solution to filter content on the Internet that overcomes existing problems with other Internet filtering systems much like the claims present in DDR which were claiming a technical way to satisfy an existing problem for website hosts and viewers.

My two cents: Finally, a Federal Circuit decision providing applicants and appellants the ability to rebut step two assertions from the Patent Office that the claim elements merely recite a "generic," "routine," and/or "conventional" components.





 

Friday, June 17, 2016

Claims Directed to Prioritizing Events on an Electrical Power System Found Invalid as Being Directed to Patent-Ineligible Subject Matter Under 101

Takeaway:  A PTAB panel introduced a new ground of rejection sua sponte finding that the claimed subject matter was directed to patent-ineligible subject matter. The panel found that the claimed subject matter was directed to prioritizing events within an electrical power system and that the Applicant's patent application described nothing more that mere data collection within the system and prioritizing events based upon a ranking.  In other words, the Applicant's patent application admitted that it was known to gather data about abnormal conditions within an electrical system.  As such, the panel equated the technical details of the claimed subject matter to limiting the use of the abstract idea of prioritizing events to a particular technological environment.  (Ex parte Muthu-Manivannan, Appeal 2014-006595, PTAB June 13, 2016.)

Details:
Ex parte Muthu-Manivannan
Appeal 2014-006595;  Application 12/031,990;  Technology Center 2400
Decided: June 13, 2016

In a recent decision in which the Applicant appealed an examiner's rejection under 35 U.S.C. 103, the Board entered a new ground of rejection under 35 U.S.C. 101 for method claims that were directed to "prioritizing events on an electrical power system."  Claim 1, which was illustrative of the claimed subject matter, recited:

A method for prioritizing events on an electrical power system, comprising:
(a) acquiring at least one data portion representative of the behavior of an electrical power system, where the electrical power system comprises all or a part of a system that conducts electrical power between an electric power source and an electric load, the at least one data portion containing at least one power system event which represents a deviation from steady-state operation of the electrical power system;
(b) assigning at least one rank value to the at least one data portion based on the type of power system event, the rank value indicative o f a priority o f the event; and
(c) conducting subsequent data processing operations on the at least one data portion in accordance with the at least one rank value.
 
The Board began its analysis with first determining "whether the claims at issue are directed to one of those patent-ineligible concepts" (e.g., fundamental economic practice, method of organizing human activity, an idea of itself, or mathematical formula or relationship).

In this analysis, the Board noted that claim 1 was directed to a method that comprised "(a) acquiring data containing an event representing a deviation from a steady state operation of a power system, (b) assigning a rank indicative of a priority based on the type of event, and (c) conducing data processing operations in accordance with the rank."  Based upon this finding, the Board found that the claim was only directed "to the idea of prioritizing events based on type and processing data in accordance with the rank."  The Board went on to state that "this idea, which amounts to a scheme for organizing and using information, is abstract, as were similar to concepts that have been considered by both the Supreme Court and our reviewing Court" and referred to decisions finding claims directed to patent-ineligible subject matter such as in In re TLI Communications LLC Patent LitigationNo. 2015-1372, 2016 WL 2865693 (Fed. Cir. May 17, 2016) and in Intellectual Ventures I LLC v.Capital One Bank (USA)792 F.3d 1363, 1367 (Fed. Cir. 2015).

Finding that the claimed subject matter was directed to an abstract idea, the Board transitioned to determining whether the claimed subject matter was directed to significantly more than the abstract idea itself (i.e., directed to a patent-eligible application of the abstract idea).  In this analysis, the Board pointed to the background and specification portions of Applicant's patent application to find that "it was known to gather information about abnormal conditions in an electrical system for used by operations and maintenance personnel" and that "the claim merely acquires data, ranks the data, and 'conduct[s] subsequent data processing operations' according to the ranking."  Based upon these findings the Board found that claim 1, as a whole, comprised "conventional steps involved in managing an electrical system (i.e., processing events), to which the abstract idea of ranking is applied, where the steps are performed on a computer."  The Board went on to note that "neither limiting the use of an abstract idea to a particular technological environment nor using a general purpose computer can transform the idea into a patent-eligible invention."

Based upon these findings, the Board concluded that independent claim 1 did not amount to more than an abstract idea and entered a new ground of rejection. 

My two cents:  This decision provides further support that any description of "conventional," "known," and "routine" usages of technology within the specification may come back to bite an applicant since the Board, patent examiners, and the courts have utilized these types of descriptions to support a finding that an abstract idea was merely being implemented within a particular technological environment or being implemented using a general purpose computer. 


Tuesday, May 24, 2016

PTAB: Nuijten Doesn't Apply to Method Claims

[Today's guest post is from Robert K S, who is a patent attorney from Cleveland, Ohio.]

Takeaway: The 35 U.S.C. § 101 prohibition against claims covering transitory signals per se, as articulated by the Federal Circuit in In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), does not apply to method claims, since methods are processes and are therefore among the expressly permitted categories of statutory subject matter. Ex parte Kosuru, No. 2014-005593 (P.T.A.B. May 19, 2016).

Details:
Ex parte Kosuru
Appeal 2014-005593; Appl. No. 13/406,478; Tech. Center 2100
Decided: May 19, 2016

In the application underlying this appeal decision, all of the independent claims were method claims, and each recited an "input file being stored on a computer readable storage medium." Initially, the word "storage" was absent from the claims, and the examiner rejected all of the claims as directed to non-statutory subject matter under § 101, citing to In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) ("A transitory, propagating signal . . . is not a 'process, machine, manufacture, or composition of matter.' Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.") The claims were amended to specify that the "medium" was a "storage medium," as above, but the examiner maintained the rejection on final.

The Federal Circuit held in Nuijten that a propagating signal itself, such as a radio broadcast, an electrical signal through a wire, or a light pulse through a fiber-optic cable, is not patentable subject matter. According to then-director David Kappos's January 26, 2010 memo to the examining corps, entitled "Subject Matter Eligibility of Computer Readable Media," the PTO interpreted the Federal Circuit's decision in Nuijten to mean that "[w]hen the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter." The memo references the Nuijten opinion as well as the August 24, 2009 PTO memo, "Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101."

In their briefs in Kosuru, the appellants conceded that their claims were "drawn to" a computer-readable storage medium, but emphasized that the use of the word "storage" meant that the claims could not read on transitory signals and thus were subject-matter eligible. In support, the appellants referred to Ex parte Hu, No. 2010-000151 (B.P.A.I. Feb. 9, 2012), which held that "[w]hile a computer-readable medium is broad enough to encompass both tangible media that store data and intangible media that carry a transitory, and propagating signal containing information, a computer readable storage medium is distinguished therefrom as it is confined to tangible media for storing data" (emphasis added).

The examiner's only response was an allegation that the specification did not refer to "storage" media—a weak response given that the claims clearly recited "storage" and no rejection was made on § 112 grounds for lack of written description or enablement. The appellants' reply brief noted several specification paragraphs that mentioned algorithms "stored on" computer-readable media or on "a disk," but even absent this support, PTO policy evidently tolerates amendment language limiting claims to non-transitory embodiments even when such language is not explicitly supported, so long as non-transitory interpretations are not ruled out by the specification. See the above-mentioned 2010 memo ("A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments . . . . Such an amendment would typically not raise the issue of new matter, even when the specification is silent . . .").

The PTAB resolved the appeal of the § 101 rejection on much broader grounds than the examiner and appellants had argued: "Unlike the claims at issue in In re Nuijten, each of the pending claims here recites a method—a series of acts or steps—and thus falls under the statutory category of 'process.'" Indeed, the examiner (and the Board) had only to read the opinion cited in support of the rejection to realize that, in Nuijten, disputed independent claim 14 was directed to "[a] signal," while claims 1-10, directed to "[a] method," and 11-13, "[a]n arrangement for embedding supplemental data in a signal," were not appealed because the PTO found them statutory without any fuss.

My two cents: Nuijten did not expressly hold that process claims cannot be rejected as "covering" transitory signals, because that issue was not before the Nuijten court. This case may provide useful support for countering Nuijten-type rejections of method claims.

Kosuru may have been a case of an examiner attempting to follow a PTO directive rather than the law upon which it was based. Transitory signal subject-matter analysis is a narrow area of subject-matter eligibility analysis. Like the words "directed to" used in broader subject-matter eligibility jurisprudence, including abstract-idea jurisprudence (see, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2355 (2014); In re Benson, 441 F.2d 682, 684 (C.C.P.A. 1971)), the word "covers" used in the Kappos memo ("[w]hen the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected . . .") can be interpreted overly broadly. When "covers" is read to mean "includes" or "involves" rather than "effectively claims" or "ties up," the PTO interpretation of Nuijten can be read as making ineligible even statutory categories like processes. The examiner and appellants got lost on a wild goose chase over whether the specification taught "storage" media, whereas the real question was the propriety of the examiner's initial decision as to whether the claims could be interpreted as attempting to capture, among whatever else, transitory signals per se.

Another potentially winning argument in this case might have been to argue that the claimed "input file" cannot reasonably be interpreted as encompassing transitory signals, since, even under broad interpretations, "file" has a meaning of a record of greater-than-transitory permanence such that it can be stored and retrieved at arbitrary times. After this PTAB decision, such an argument is superfluous in view of the fact that an Applicant can simply point out that the claims are couched as methods.

Tuesday, May 17, 2016

Enfish Mayo Step One Inquiry Fails to Save Claims Directed to Assigning Classification Data to Digital Images From Being Deemed an Abstract Idea

Takeaway: The Federal Circuit utilized the updated Mayo analysis set forth in the recent Enfish v. Microsoft decision to affirm a lower court’s ruling that the claims at issue were directed to patent-ineligible subject matter. In part, the Federal Circuit found the claimed subject matter was directed to the abstract idea of assigning “classification data” to digital images and that the claims merely recited generic components that did not provide an “inventive concept” that would transform the otherwise patent-ineligible abstract idea into a patent-eligible application of the concept. (TLI Communications LLC, v. AV Automotive, L.L.C., 2015-1372, -1376, -1377, -1378, -1379, -1382, -1383, -1384, -1385, -1417, -1419, -1421, May 17, 2016)

Details:
TLI Communications LLC, v. AV Automotive, L.L.C.
2015-1372, -1376, -1377, -1378, -1379, -1382, -1383, -1384, -1385, -1417, -1419, -1421
Decided: May 17, 2016

In a recent precedential decision, the Federal Circuit invalidated claims reciting an invention that assigns “classification data,” such as a date or a timestamp, to digital images as being directed to an abstract idea under 35 U.S.C. § 101 even in light of the updated Mayo step one inquiry as set forth in Enfish, LLC v. Microsoft Corp., No. 2015-2044 (Fed. Cir. May 12, 2016). More specifically, the decision in Enfish clarified that the relevant inquiry at Mayo step one was “to ask whether the claims are directed to an improvement to computer functionality versus being directed an abstract idea. See Enfish slip op. at *11.

Claim 17, which is representative of the subject matter, recited:

A method for recording and administering digital images, comprising the steps of:

recording images using a digital pick up unit in a telephone unit,

storing the images recorded by the digital pick up unit in a digital form as digital images,

transmitting data including at least the digital images and classification information to a server, wherein said classification information is prescribable by a user of the telephone unit for allocation to the digital images,

receiving the data by the server,

extracting classification information which characterizes the digital images from the received data, and

storing the digital images in the server, said step of storing taking into consideration the classification information.

At Mayo step one (i.e., determining whether the claims at issue are directed to a patent-ineligible concept), the Federal Circuit found that the subject matter of claim 17 was drawn to the concept of classifying an image and storing the image based on its classification. The Federal Circuit noted that the claim required “concrete, tangible components such as 'a telephone unit' and a 'server.'“ However, the Federal Circuit went on to state that the “specification makes clear that the recited physical components merely provide a generic environment in which to carry out the abstract idea of classifying and storing digital images in an organized manner” and that the specification's emphasis that the “present invention 'relates to a method for recording, communicating and administering [a] digital image' underscores that claim 17 is directed to an abstract concept.”

As mentioned above, the Federal Circuit utilized the recent clarification to Mayo step one set forth in Enfish to examine whether the claimed subject matter was directed to an improvement in computer functionality or whether the claimed subject matter was directed to an abstract idea. In supporting its conclusion that the claims were directed to an abstract idea, the Federal Circuit found that the claims were not directed to a specific improvement to computer functionality. Instead, the Federal Circuit found that the claims were directed to usage of conventional or generic technology in a well-known environment.

Of note, the Federal Circuit focused its discussion on the appellant's specification. For instance, the Federal Circuit states that the “specification does not describe a new telephone, a new server, or a new physical combination of the two” and that the “specification fails to provide any technical details for the tangible components, but instead predominantly describes the system and methods in purely functional terms.” The decision points to the description of the “telephone unit” in the specification as having “the standard features of a telephone unit” and that “cellular telephones may be utilized for image transmission.” Additionally, the decision points to the description of the server as being described “simply in terms of performing generic functions such as storing, receiving, and extracting data.”

In concluding its Mayo step one analysis, the Federal Circuit likened the claims at issue to the claims at issue in Content Extraction v. Wells Fargo Bank, which were directed to “collecting data,” “recognizing certain data within the collected data set,” and “storing the recognized data in memory.”

In its Mayo step two analysis (i.e., whether the claims at issue include an “inventive concept”), the Federal Circuit found that the claims failed to recite any “elements that individually or as an ordered combination transform the abstract idea of classifying and storing digital images in an organized manner into a patent-eligible application of that idea.” Similar to its analysis set forth above with respect to Mayo step one, the Federal Circuit found that the claims at issue merely recited generic computer components “insufficient to add an inventive concept to an otherwise abstract idea” and that ”the recited physical components behave exactly as expected according to their ordinary use.”

As such, the Federal Circuit affirmed the lower court's decision that the claims at issue were directed to an abstract idea and, thus, invalid under 35 U.S.C. § 101.

My two cents: Again, this decision provides a lesson that the any specification should include as much technical detail as possible. For example, this Federal Circuit decision focused on the inadequacies of the specification (e.g., the specification described the system in purely functional terms, only describing the components in terms of performing generic functionality, etc.). Additionally, the Enfish decision notes that the specification in that case explained that the prior art database structures were inferior to the claimed invention. Thus, Applicants may consider including explanations of  why Applicant’s technology is superior to the prior art in the specification.